Hansen Beverage Company d/b/a Monster Beverage Company, a Delaware Corporation v. huang shouhai
Claim Number: FA1109001408871
Complainant is Hansen Beverage Company d/b/a Monster Beverage Company, a Delaware Corporation (“Complainant”), represented by Lauren Keller Katzenellenbogen of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is huang shouhai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopmonsterenergy.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2011; the National Arbitration Forum received payment on September 23, 2011.
On September 26, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <shopmonsterenergy.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@shopmonsterenergy.com. Also on September 30, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shopmonsterenergy.com> domain name is confusingly similar to Complainant’s MONSTER ENERGY mark.
2. Respondent does not have any rights or legitimate interests in the <shopmonsterenergy.com> domain name.
3. Respondent registered and used the <shopmonsterenergy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hansen Beverage Company d/b/a Monster Beverage Company, a Delaware Corporation, designs, develops, markets and sells beverages to consumers worldwide. Complainant owns the following trademark registrations for its MONSTER ENERGY mark:
1. United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,057,061 registered February 7, 2006;
2. European Union Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 4,823,563 registered January 10, 2007); and
3. Chinese State Administration of Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,447,961 registered May 28, 2009).
Respondent, huang shouhai, registered the <shopmonsterenergy.com> domain name on July 2, 2011. Respondent’s disputed domain name resolves to a website that sells counterfeit versions of Complainant’s merchandise, such as clothing and hats that feature Complainant’s logos and trademarks.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence to show that it owns numerous trademark registrations for its MONSTER ENERGY mark with several governmental trademark authorities worldwide including the following:
USPTO (e.g., Reg. No. 3,057,061 registered February 7, 2006;
OHIM (e.g., Reg. No. 4,823,563 registered January 10, 2007); and
SAIC (e.g., Reg. No. 5,447,961 registered May 28, 2009).
The Panel finds that Complainant has presented sufficient evidence to establish rights in its MONSTER ENERGY mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant further argues that Respondent’s <shopmonsterenergy.com> domain name is confusingly similar to its MONSTER ENERGY mark. Complainant notes that the domain name contains its entire mark while adding the generic term “shop.” Further, the Panel notes that Respondent’s domain name also removes the space between the terms of the mark while adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the changes made to Complainant’s mark do not prevent the disputed domain name from being confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Under the Policy, a complainant must produce a prima facie case in support of its allegations before the burden shifts to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has presented a prima facie, and that due to Respondent’s default, the Panel may accept Complainant’s contentions as true. However, the Panel will continue to evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(c).
Complainant argues that Respondent has not been commonly known by the disputed domain name. Complainant also argues that Respondent has never been authorized by Complainant to use its mark in any way. The WHOIS information identifies “Huang Shouhai” as the registrant of the domain name. Respondent has not come forward with any information or evidence indicating that it is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant has submitted screen shot evidence to show that Respondent is using the disputed domain name to sell counterfeit products that bear Complainant’s logos and trademarks. Complainant also submits a screen-shot of its own website for comparison with Respondent’s. The Panel finds that Respondent’s website is nearly identical to that of Complainant, and that t-shirts and baseball hats being sold on Respondent’s website do indeed bear Complainant’s energy drink logo and trademark. Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (“The Panel finds that registering a confusingly similar domain name to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent registered the disputed domain name primarily to disrupt Complainant’s business. Complainant argues that Respondent’s use of the disputed domain name to sell counterfeit and unauthorized goods is evidence of bad faith on Respondent’s part because such use invariably disrupts Complainant’s business. The Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that the respondent’s disputed domain name disrupted the complainant’s business and was evidence of bad faith registration and use where Internet users looking for the complainant’s website may instead find respondent’s website and purchase counterfeit goods on the disputed domain name); Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”).
Complainant also argues that Respondent registered the disputed domain name to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark. Respondent is not only using Complainant’s mark in the domain name but also its logos and trademarks on the resolving website and on merchandise that Respondent is selling to Internet users. The Panel finds that such use is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent registered and uses the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood on confusion); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding bad faith registration and use of the domain name under Policy ¶ 4(b)(iv) where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services).
Lastly, the Panel finds that Respondent had actual knowledge of Complainant and its rights in the mark. Respondent is using the disputed domain name to present Internet users with a website that is nearly identical to Complainant’s official website, while is selling counterfeit goods bearing Complainant’s logos. Therefore, the Panel finds that Respondent had actual knowledge of Complainant and its rights in the mark, and that when it chose to register the disputed domain name, it did so in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopmonsterenergy.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 7, 2011
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